Category: Willful Infringement

Nike sued Puma for infringement of seven Nike patents covering shoes having knitted upper, and alleged that after it notified Puma about the patents prior to filing suit, Puma not only failed to cease making and selling the accused products, Puma also introduced new shoes to the market that infringed the patents. Puma moved to dismiss the claims with respect to two of the patents as directed to non-patentable subject matter, asserting that one was directed to the abstract idea of forming an outline pattern on a textile and does not disclose an inventive step towards achieving the outline pattern, and that the second is directed to the abstract idea of generating a visual pattern on a textile, which is nothing more than a non-patentable work of art. Judge Sorokin disagreed, finding that the claims, which were directed to tangible manufactured items (i.e., shoes) or to physical components thereof or methods of manufacturing the same, they passed muster under the first prong of the Mayo test as being directed to a statutorily provided category of patent-eligible subject matter. He further noted that, even if they did not, Puma had not met its burden of demonstrating by clear and convincing evidence that the claims lacked an inventive step that would meet the second prong of the Mayo test. Judge Sorokin also denied Puma’s motion to dismiss the willfulness charges, finding Puma’s suggestion that more must be pled than knowledge of the patent and continued infringement remained an open question (albeit one that other Massachusetts judges had found incorrect), but that Nike had sufficiently pled additional facts that would support a finding of willfulness.

Following a trial in which Rolling Optics was found to have willfully induced infringement of several Crane patents, Judge Sorokin ruled on a number of post-trial motions. He denied Rolling Optics’ motion for judgment of no inducement and lack of notice as a matter of law, finding the motion a mere rehashing of the motion for summary judgment that was previously denied. He likewise denied Rolling Optics’ motion for JMOL that certain claims were anticipated, finding the jury’s determination on the credibility of the parties’ experts dispositive. Judge Sorokin denied Crane’s motion for attorneys fees under 35 USC 285, finding that Rolling Optics’ litigation conduct was not exceptional, particularly given that the injunction that would likely result from losing would jeopardize Rolling Optics’ very existence. He awarded Crane treble damages, finding that Crane had demonstrated that Rolling Optics had copied their products with extensive knowledge of Crane’s patent portfolio and that Rolling Optics took no steps to ensure that they were not infringing valid patent claims – indeed, Rolling Optics continued shipping products into the United States seven months after it had been advised by its legal team to cease doing so. Finally, Judge Sorokin entered a permanent injunction, finding that Rolling Optics was directly competitive to Crane such that continued infringement would result in harms that could not be adequately remedied at law.

Michigan graphics company Great Dane offers subscription services that provide licenses to an extensive library of original graphic artwork for clothing such as T-shirts. Gosselin, a former employee of one such licensee, is accused of having stolen thousands of copyrighted Great Dane images from his ex-employer and using them to set up a competing screen printing business, Vovo. Gosselin reportedly used the same selection, arrangement and coordination of the images, and even to have used the same product numbers for the images as had Great Dane. In addition to the civil suit, it appears that Gosselin is being investigated by the Braintree police, as a police report is included as an exhibit to the complaint. Great Dane seeks injunctive relief, statutory damages of up to $150,000 per infringement due to the alleged willful nature of the infringement, and attorney’s fees.

Larry Philpot, a professional concert and event photographer from Indiana, sued Encore Unlimited, Inc., Printed Guitar Picks Limited, and numerous individuals for copyright infringement. Philpot alleges the defendants uploaded photographs he had taken of Carlos Santana, Neil Young, and Kid Rock, printing them on guitar picks, and advertising and selling them through their own websites as well as on Ebay. He seeks liability for reproduction and public display, as well as for unfair and deceptive trade practices under M.G.L. Ch. 93A. Philpot further alleges that the copyright infringement was willful, based (solely, it appears) on his allegation that the defendants tried to hide their identities by registering their domains under aliases. A review of one of the defendant’s websites (www.printedguitarpicks.com) reveals that the company allows customers to upload pictures to be printed on guitar picks, while also offering stock pictures of various artists; it is unclear from the complaint whether the former or the latter are the subject of the suit. For the latter, the website indicates that all customers submitting photographs warrant that they obtained permission from the copyright holder; it will be interesting to see whether this clause affects the willfulness decision.

Judge Zobel entered final judgment in accordance with the December 14, 2016 jury verdict and her April 24, 2017 Order. The final judgment included:

direct and indirect willful infringement of U.S. Patent 5,229,137;

‘137 patent valid over the prior art of record;

Perrigo was not entitled to a laches defense because plaintiffs knew or should have known of infringement only as of August 2008, too recent for laches to apply;

Damages of $10,210,071;

Attorneys’ fees were not awarded, as the defense, while not successful, was not frivolous or vexatious, as Perrigo had investigated infringement and invalidity before filing its ANDA application ad Brigham’s corporate witness testified that it did not immediately bring suit for fear of losing royalties should the claims be found invalid; and

Enhanced damages would not be applied, despite the jury’s finding of willfulness, in part because the awarded damages were at the high end of those sought.

Judge Zobel’s April order was interesting in that she found that final judgment had previously been entered, triggering the timelines of Fed R. 50(b) and 59(e), which could not be expanded by the district court, despite her having granted a joint motion to extend the deadline. Thus, Perrigo’s renewed motion for judgment as a matter of law was not timely filed, and its notice of appeal was also late.

Judge Gorton granted the plaintiffs’ motion in limine to exclude Zoll’s expert from testifying about the invalidity of claims of two patents in defense of charges of willful infringement of a third patent. His reasoning was two-fold; first, the invalidity of claims from a different patent is not probative of whether infringement of a third patent was willful, and second, invalidity was first found on appeal, well after the infringement occurred, and thus the invalidity of the claims of the other patents could not serve as evidence of the state of mind of the infringer under the Supreme Court’s Halo decision of 2016.

About this blog…

The D. Mass. IP Litigation Blog will monitor the U.S. District Court for Massachusetts, with a special interest on patent, trademark, trade secret, antitrust, and copyright litigation. Since the Supreme Court’s TC Heartland decision, we have seen an increase in intellectual property filings in D. Mass. due to the high concentration of technology and life sciences companies in the Commonwealth and because of the Court’s ability to handle complex, accelerated matters. We plan on providing our readers with timely insights on recent cases.